UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/474369

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

SEARCH RESULTS

Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial No. 78/141108.  37 C.F.R. Section 2.83. 

 

There may be a likelihood of confusion between the applicant's mark and the mark in the above noted application under Section 2(d) of the Act.  The filing date of the referenced application precedes the applicant's filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

Action on this application will be suspended pending the disposition of the above-referenced application, upon receipt of the applicant's response resolving the following informalities.

Identification of Goods/Services

The identification of goods/services is unacceptable in its present form and must be amended to read as follows,  if accurate: 

 

“Computer software, namely, client/server-based, analytical software for analyzing and evaluating environmental regulatory issues, namely, climate change, stratospheric ozone, energy efficiency, pollution prevention, waste management, emergency management, transportation and international environmental management system standards, including ISO 14001 international environmental management standards that may be downloaded from a global computer network; client/server-based analytical software for e-government applications, namely, data management, e-learning and knowledge management that may be downloaded from a global computer network; computer software for modeling, analysis and evaluation of energy industry issues, namely, development analysis, implementation of regulatory and business strategies; and computer software for data management, analysis and reporting of customer energy use data.”

                        International Class 9.

 

“Computer programming development and customization services for others; and Application Service Provider (ASP) featuring a suite of web-based analytical software tools to identify national commitment to greenhouse reduction targets for various countries, to identify sources of greenhouse gas emissions from such countries, to estimate greenhouse gas emissions from various industrial and agricultural sectors, to monitor and verify estimates of greenhouse gas emissions over time, to identify potential abatement opportunities, to estimate costs to achieve greenhouse gas reductions, to benchmark greenhouse gas reduction strategies, to identify ways to capitalize upon greenhouse gas emission reductions, to manage greenhouse gas related data; and to manage and identify ways to capitalize upon sulfur dioxide emissions; providing temporary use of online non-downloadable computer software, namely, client/server-based, analytical software for analyzing and evaluating environmental regulatory issues, namely, climate change, stratospheric ozone, energy efficiency, pollution prevention, waste management, emergency management, transportation and international environmental management system standards, including ISO 14001 international environmental management standards; providing temporary use of online non-downloadable client/server-based analytical software for e-government applications, namely, data management, e-learning and knowledge management.”

            International Class 42.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.  Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods/services that are not within the scope of goods/services set forth in the present identification.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

Specimen

For Class 9, the specimen is unacceptable as evidence of actual trademark use because it is promotional material.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).  The applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R. §2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  TMEP §§904.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §2.59(a); TMEP §904.09.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

 

Tracy Cross

/Tracy Cross/

Law Office 103

Phone:   (703) 308-9103 ext. 224

Fax:       (703) 746-8103

E-mail:    ecom103@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.